Polyethylene/polypropylene range (obviousness of ranges)

44. A claim in an application recites “[a] composition containing: (a) 35-55% polypropylene; and (b) 45-65%

polyethylene.” The sole prior art reference describes, as the only relevant disclosure, a composition

containing 34.9% polypropylene and 65.1% polyethylene. In accordance with USPTO rules and procedures set

forth in the MPEP, the primary examiner should properly:

(A) Indicate the claim allowable over the prior art because there is no teaching, motivation or suggestion

to increase the amount of polypropylene from 34.9% to 35% and decrease the amount of polyethylene from 65.1% to 65%.

(B) Reject the claim under 35 USC 102 as anticipated by the prior art reference.

(C) Reject the claim under 35 USC 103 as obvious over the prior art reference.

(D) Reject the claim alternatively under 35 USC 102 as anticipated by or under 35 USC 103 as obvious over the

prior art reference.

(E) None of the above.

Explanation:

(C) is the most correct answer. A prima facie case of obviousness exists where the claimed ranges and the prior art

are close enough that one of ordinary skill in the art would have expected them to have the same properties. See MPEP

§ 2144.05. In Titanium Metals Corp. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985), a claim recited

a titanium base alloy consisting essentially of 0.8% nickel, 0.3% molybdenum, up to 0.1% maximum iron, and the balance

titanium. A prior art reference described two similar alloys: (i) one with 0.25% molybdenum, 0.75% nickel, and balance

titanium; and (ii) another with 0.31% molybdenum, 0.94% nickel, and balance titanium. The court held: As admitted by

appellee’s affidavit evidence from James A. Hall, the Russian article discloses two alloys having compositions very

close to that of claim 3, which is 0.3% Mo and 0.8% Ni, balance titanium. The two alloys in the prior art have 0.25%

Mo-0.75% Ni and 0.31% Mo-0.94% Ni, respectively. The proportions are so close that prima facie one skilled in the art

would have expected them to have the same properties. Appellee produced no evidence to rebut that prima facie case.

The specific alloy of claim 3 must therefore be considered to have been obvious from known alloys. Id. Thus, (A) is

incorrect. (B) and (D) are incorrect because a claim is anticipated by a prior art reference only when the prior art

discloses, either expressly or inherently, every limitation of the claimed invention. (E) is incorrect because (C) is

correct.